GOOGLE V. ORACLE
Fair Use in View of the Supreme Court Case
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On April 5, 2021, the Supreme Court of the United States (SCOTUS) decided GOOGLE LLC v. ORACLE AMERICA, INC.  The decision has implications that touch almost every software company that develops or licenses software, as either a licensor or a licensee.  Our overview and commentary on this case are divided into three parts. This is part three which will discuss the holding’s implication on FAIR USE assessments in software copyright claims.

Jump to: Part One – Software Copyright Law  |  Part Two – The Case & Holding

VIDEO: ON FAIR USE (~2 Mins.)

Article Continued Below…

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The doctrine of “fair use” is flexible and takes account of changes in technology. Computer programs differ from many other copyrightable works because computer programs always serve a functional purpose. Because of these differences, fair use has an important role to play for computer programs by providing a context-based check that keeps the copyright monopoly afforded to computer programs within its lawful bounds. Pp. 15–18.

“Google envisioned an Android platform that was free and open, such that software developers could use the tools found there free of charge. Its idea was that more and more developers using its Android platform would develop ever more Android-based applications, all of which would make Google’s Android-based smartphones more attractive to ultimate consumers.”

Effectively, this approach indicates that:

1) by default, software functions are protected by copyright law to the extent they are copied;

2) however, the court must then apply the FAIR USE doctrine, which gives the court case-by-case flexibility to decide what computer functions may be protected under copyright, and which may be protected only under patent law.

To determine whether Google’s limited copying of the API here constitutes fair use, the Court examines the four guiding factors set forth in the Copyright Act’s fair use provision. The Four Guiding Factors are:

The purpose and character of the use;

The inquiry into the “the purpose and character” of the use turns in large measure on whether the copying at issue was “transformative,” i.e., whether it “adds something new, with a further purpose or different character.” Campbell, 510 U. S., at 579. Google’s limited copying of the API is a transformative use. Google copied only what was needed to allow programmers to work in a different computing environment without discarding a portion of a familiar programming language. Google’s purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform—the Android platform—that would help achieve and popularize that objective. The record demonstrates numerous ways in which reimplementing an interface can further the development of computer programs. Google’s purpose was therefore consistent with that creative progress that is the basic constitutional objective of copyright itself. Pp. 24–28.

The nature of the copyrighted work;

The nature of the work at issue favors fair use. The copied lines of code are part of a “user interface” that provides a way for programmers to access prewritten computer code through the use of simple commands. As a result, this code is different from many other types of code, such as the code that actually instructs the computer to execute a task.

The court stated that the copied lines are inherently:

  • uncopyrightable ideas (e.g., the structure of API), coupled with:
  • the creation of new creative expression (the code independently written by Google that incorporated the API commands).

Given these differences, the application of fair use here is unlikely to undermine the general copyright protection that Congress provided for computer programs. Pp. 21–24.

The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

Google copied approximately 11,500 lines of declaring code from the API, which amounts to virtually all the declaring code needed to call up hundreds of different tasks. Those 11,500 lines, however, are only 0.4 percent of the entire API at issue, which consists of 2.86 million total lines. In considering “the amount and substantiality of the portion used” in this case, the 11,500 lines of code should be viewed as one small part of the considerably greater whole. As part of an interface, the copied lines of code are inextricably bound to other lines of code that are accessed by programmers.  Google copied these lines not because of their creativity or beauty but because they would allow programmers to bring their skills to a new smartphone computing environment. The “substantiality” factor will generally weigh in favor of fair use where, as here, the amount of copying was tethered to a valid, and transformative, purpose. Pp. 28–30.

The effect of the use upon the potential market for or value of the copyrighted work. §107.

The fourth statutory factor focuses upon the “effect” of the copying in the “market for or value of the copyrighted work.” §107(4). Here the record showed that Google’s new smartphone platform is not a market substitute for Java SE. The record also showed that Java SE’s copyright holder would benefit from the reimplementation of its interface into a different market. Finally, enforcing the copyright on these facts risks causing creativity-related harms to the public. When taken together, these considerations demonstrate that the fourth factor—market effects—also weighs in favor of fair use. Pp. 30–35.

CONCLUSION

In conclusion, applying the principles of the Court’s precedents and Congress’ codification of the fair use doctrine to the distinct copyrighted work here, the Court concludes that Google’s copying of the API to reimplement a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, constituted fair use of that material as a matter of law.

 

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Yuri L. Eliezer, Partner

Partner, Patents & Advanced Technology Attorney

Yuri heads the Intellectual Property practice group at Founders Legal.  A practice he co-founded at the Atlanta Tech Village – the nation’s fourth-largest incubator.  By the nominations of colleagues that have worked with him over the past several years, Yuri was selected to the 2021 and 2020 Super “Patent” Lawyer Lists, an award that is given to just 2.5% of attorneys.  His recognition relates to his work in securing multi-million dollar patents for his clients – patents that have been tested through USPTO examination, re-examination and litigation.  Yuri also strives to use his first-hand knowledge of the legal industry to develop innovative methods to improve the practice of law, and has been recognized as a player in the law practice technology field.

His degree in Electrical and Computer Engineering has helped him serve technology companies of all sizes including various startups, Microsoft, Cisco, Cox, AT&T, General Electric, Georgia Institute of Technology, and Coca-Cola.

Founders Legal (Bekiares Eliezer LLP) is a boutique Corporate & Intellectual Property Law Firm based in Atlanta, Georgia USA, and trusted by thousands of companies nationwide. Founders Legal focuses exclusively on complex matters in the areas of Intellectual Property, Corporate, Transactional, and Securities law.

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